OPPOSITION No B 3 071 861

Telefónica Germany GmbH & Co. OHG, Georg-Brauchle-Ring 50, 80992 München, Germany (opponent), represented by Müller Fottner Steinecke Rechtsanwälte PartmbB, Elisenstraße 3, 80335 München, Germany (professional representative)

a g a i n s t

Hyperloop Transportation Technologies Inc., 11844 Jefferson Blvd, Culver City 90230, United States of America (applicant), represented by AB Asesores, Calle Bravo Murillo 219 - 1º B, 28020 Madrid, Spain (professional representative).

On 19/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 861 is upheld for all the contested goods.

2. European Union trade mark application No 17 969 415 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods (Class 28) of European Union trade mark application No 17 969 415 for the word mark ‘HYPERLOOP’. The opposition is based on German trade mark registration No 30 069 384 for the word mark ‘LOOP’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the German trade mark on which the opposition is based.

In the present case, the contested trade mark was filed on 22/08/2018.

In order to determine the date of commencement of the five-year grace period for a national mark, national law is relevant. The commencement of this period depends on the registration procedure of the Member States (14/06/2007, C‑246/05, Le Chef de Cuisine, EU:C:2007:340, § 26-28). Consequently, the term ‘registration’ must be interpreted as the ‘date of the completion of the registration procedure’ as defined by national law (Article 16(1) of Directive (EU) 2015/2436).

In German national proceedings, the opposition period is applied as a post-registration procedure. As indicated in the corresponding extract of the opponent’s German trade mark No 30 069 384, this mark had an opposition proceeding pending, which concluded in 2017. Consequently, at the time of publication of the contested EUTM application, the earlier mark was not under the use requirement as the five-year grace period commences from the date of the closure of the opposition period.

Therefore, the request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 28: Games and playthings; gymnastic and sporting articles as far as included in Class 28; decorations for Christmas trees.

The contested goods and services are the following:

Class 28: Electronic games other than those adapted for use with television receivers only; toy, namely, battery powered computer game with LCD screen which features animation and sound effects; games, toys and playthings; video games apparatus.

The contested electronic games other than those adapted for use with television receivers only; toy, namely, battery powered computer game with LCD screen which features animation and sound effects; games, toys and playthings; video games apparatus are identically contained in both lists of goods, or are included in the broad categories of the opponent’s games and playthings. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

LOOP	HYPERLOOP
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark ‘LOOP’ will be understood by part of the relevant public as: 1) a closed pipe circuit in which material tests are carried out under various conditions (used in nuclear technology); 2) a sequence of program parts that can be run through several times (used in IT); or, 3) a short sound sequence repeated several times with technical means in electronically generated or supported music’ (information extracted from Duden on 13/10/2020 at https://www.duden.de/rechtschreibung/Loop). However, it is highly conceivable that, at the least, the part of the general public that is interested in buying toys and playthings will not make any associations with this element. In any case, understood or not, this element is distinctive for the goods at issue, as none of the possible meanings directly refers to the goods at issue.

The contested sign ‘HYPERLOOP’ is a word mark. Despite comprising a single verbal element, it will be perceived by the public as the combination of the words ‘HYPER’ and ‘LOOP’. This is because although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which suggest a specific meaning or resemble words known to the them (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In German, the prefix ‘hyper’ is used with nouns and adjectives to express excessive size, something overdone or reinforced. It is part of many compound words, for example, hyperempfindlich (hypersensitive), hyperformat (hyperformat) and hyperkorrektheit (hypercorrect). It will be regarded as a laudatory element referring to the word that follows it, which it qualifies as a bigger, larger version and, therefore, it is non-distinctive.

The findings above, regarding the meaning and distinctiveness of the element ‘LOOP’, equally apply to the contested mark.

Visually and aurally, the signs coincide in the word ‘LOOP’, which is the entire earlier mark and the second part of the contested sign. The signs differ in the beginning of the contested mark with the additional verbal element ‘HYPER’.

Therefore, bearing in mind that consumers pay more attention to the beginning of signs, but also considering that the differing beginning ‘HYPER’ in the contested sign is non-distinctive, the Opposition Division considers that the signs are visually and aurally similar to an average degree.

Conceptually, for the part of the public that understands the meaning of the verbal element ‘LOOP’, as described above, the signs are highly similar. This is because the contested sign refers to the same concept of a ‘loop’ as the earlier mark, only larger in size due to the presence of the prefix ‘HYPER’.

For the part of the public that does not understand the coinciding verbal element ‘LOOP’, the conceptual comparison is not possible. This is because although the additional element ‘HYPER’ in the contested sign will be associated with a certain meaning, it is non-distinctive and cannot indicate the commercial origin of the goods. The attention of the relevant public will be attracted by the additional verbal elements, which have no meaning.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the degree of distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

The appreciation of this likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Moreover, such a global assessment implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical. They target the general public, whose degree of attention may vary from average to high. The signs are visually and aurally similar to an average degree. Conceptually, either they are highly similar or the conceptual aspect does not influence the assessment of the similarity of the signs.

The earlier trade mark is entirely reproduced in the contested sign. Although signs are usually perceived as a whole, in a complex mark, certain elements might have a greater impact on consumers than others, in terms of identifying origin. It is conceivable that the difference between the signs will be noticed by the relevant consumers. Nevertheless, this does not exclude the possibility of a likelihood of confusion on the part of the public. This is because it is common practice for manufacturers and service providers to make variations in their trade marks, for example by adding verbal or figurative elements to endow them with a new, modern image, or denote new product/service lines. Indeed, in this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates due to the presence of the common element ‘LOOP’ in both marks (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, bearing in mind that the goods were found to be identical and the principle of interdependence, the clearly perceivable differing element ‘HYPER’ at the beginning of the contested sign does not suffice to exclude the erroneous association between the signs. This is even more true for the part of the public that understands the meaning of the coinciding verbal element ‘LOOP’. Due to the additional element ‘HYPER’, the contested mark will be perceived merely as a bigger, better version of the earlier mark ‘LOOP’.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the abovementioned opponent’s German trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia MARTINI

Marta Maria CHYLIŃSKA

Astrid Victoria WÄBER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.